Olvey & Sketo v Danko & Gabrys
[2019] APO 42
•10 September 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Olvey & Sketo v Danko & Gabrys [2019] APO 42
Patent Application: 2016259383
Title:Corrugated Pallet
Patent Applicant: Sean G. Gumbert; Joseph J. Danko; Douglas A. Olvey; James L. Sketo; Christopher W. Gabrys
Requestors: Douglas A. Olvey & James L. Sketo
Delegate: Isaac Tan
Decision Date: 10 September 2019
Hearing Date: Written Submissions completed on 8 April 2019
Catchwords: PATENTS – section 32 – request for the Commissioner to make a determination between applicants – evidence appears to be based on personal recollections and belief – section 32(1) is a discretionary provision - insufficient evidence to make a determination – requestors carry the legal burden of proof – costs awarded against the requestor.
Representation: Douglas A. Olvey & James L. Sketo are represented by Alison McMillan, Patent Attorney of IP Gateway Patent & Trade Mark Attorneys Pty Ltd.
Joseph J. Danko & Christopher W. Gabrys are self-represented.
Sean G. Gumbert elected not to play a part in these proceedings.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016259383
Title:Corrugated Pallet
Patent Applicant: Sean G. Gumbert; Joseph J. Danko; Douglas A. Olvey; James L. Sketo; Christopher W. Gabrys
Date of Decision: 10 September 2019
DECISION
There is insufficient evidence to make a determination. Consequently, I decline to make a determination.
The application will remain in the names of Sean G. Gumbert, Joseph J. Danko, Douglas A. Olvey, James L. Sketo and Christopher W. Gabrys.
REASONS FOR DECISION
Background
Australian Patent Application 2016259383 (application) was filed on 17 November 2016 in the names of Sean G. Gumbert, Joseph J. Danko, Douglas A. Olvey, James L. Sketo and Chrisopher W. Gabrys (hereinafter referred to collectively as the applicant). The inventors were named as Douglas A. Olvey and James L. Sketo. The application is a divisional of AU 2013281191 (‘191 application), which has since lapsed due to a failure to pay the acceptance fee by the due date. While an extension of time was requested pursuant to section 223 of the Patents Act1990 (the Act), the Delegate remained unconvinced that this provision should be enlivened and refused the extension of time request.[1]
[1] For an overview of the considerations in relation to s 223, see Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2019] APO 33; Magnum Magnetics Corporation [2019] APO 3; UON Pty Ltd v Taranis Power Group Pty Ltd [2019] APO 6.
On 21 November 2017, a Delegate of the Commissioner wrote to the applicant stating:
Dear Applicant,
It has come to the Commissioner’s attention while reviewing submissions made in relation to a request for an extension of time for parent application 2013281191 that there may be a deficiency in the Notice of Entitlement on file for the present application in view of the inconsistency between the inventor and applicant listing. This may give rise to an objection at further report stage and I therefore invite the Applicant to address this matter when responding to the first examination report.
Furthermore, I note that any amendment under s 104 may only be made by the Applicant (in this case Douglas A. Olvey, Christopher W. Gabrys, Joseph J. Danko, James L. Sketo and Sean G. Gumbert).
On 15 May 2018, IP Gateway Patent & Trade Mark Attorneys Pty Ltd filed a request on behalf of Douglas A. Olvey and James L. Sketo (collectively, the requestors), for the Commissioner to make a declaration under section 32 of the Act and remove Dr Gabrys, Mr Danko and Mr Gumbert as applicants. On 27 June 2018, Dr Gabrys provided written confirmation on behalf of himself and Mr Danko, of their intention to defend their entitlement to the application. During the evidentiary period, statutory declarations were concurrently filed by both sides as supporting material. The matter was then set for hearing to be heard by written submissions.
Evidence
Evidence in Support consists of a declaration by Dr Gabrys (Gabrys #1) on behalf of himself and Mr Danko and is accompanied with twelve (12) exhibits (hereinafter referred to as CG-1 to CG-12).
Evidence in Reply consists of declarations from:
·Gina Cornelio (Cornelio).
·Michael Neary (Neary).
·A second declaration by Dr Gabrys (Gabrys #2).
Evidence in Answer consists of declarations from:
·Alison Margaret McMillan (McMillan) and is accompanied with ten (10) exhibits (AMM-1 to AMM-10).
·Douglas Olvey (Olvey) and is accompanied with three (3) exhibits (DO-1 to DO-3).
Specification
According to the description of the specification, the present invention pertains to pallets for shipping goods.[2] Specifically, it provides a corrugated paperboard pallet that in some embodiments, is said to have high strength and stiffness and may be produced using a minimal amount of paperboard material.[3] By way of example, the specification states that:[4]
The corrugated paperboard pallets are produced from two flat blanks which comprise a pallet top and a pallet bottom. The blanks are each folded to produce only two parallel, vertically extending, double thickness ribs, three horizontal panels, two vertical side walls and two horizontal flaps. The ribs of the pallet top and the pallet bottom lock each other from opening in the center of the pallet by intersecting perpendicularly with notches. The intersection of the ribs prevents any of the ribs from flattening out. The horizontal flaps lock the ribs from opening at the edges of the pallet by intersecting perpendicularly with notches. The vertical sidewalls comprise vertical flaps that open inward defining fork passages whereby the vertical flaps lock the horizontal flaps from opening.
[2] Specification as filed, Page 1.
[3] Ibid Page 2.
[4] Ibid.
The specification goes on to explain that there are benefits with having only two ribs as opposed to three.[5] One, is that it can greatly simplify the construction of an assembly machine to assemble the pallets.[6] Two, because it reduces the area of corrugated board used in the pallet.[7] Moreover, there are notches in the ribs which are preferably dimensioned, such that the tops of the bottom ribs contact the underside of the pallet top, and the bottom edges of the top ribs contact the top side of the pallet bottom, optimising vertical support of the pallet top against vertical loads of the cargo placed on the pallet.[8] Figure 2 provides a schematic drawing of the pallet in a partially folded but unassembled state, and is shown below:[9]
The corrugated paperboard pallet 30 is produced from two flat blanks which comprise a pallet top 70 and a pallet bottom 50. The blanks 70, 50 are each folded to produce only two parallel vertically extending double thickness discontinuous ribs 71 and 51, three horizontal panels 40 and 45, two vertical side walls 41, 42, 46, 47 and two horizontal flaps 43, 44, 48, 49. The ribs 71 of the pallet top 70 and the ribs 51 of the pallet bottom each have a central portion and two rib ends. The central portions of the ribs 51 and 71 lock each other from opening in the center of the pallet 30 by intersecting perpendicularly with notches 53, as shown in Fig. 7A. As shown in Fig. 6A, when completely assembled, the horizontal flaps 43, 44, 48, 49 lock the end portions of the ribs 71, 51 from opening at the edges of the pallet 30 by intersecting perpendicularly with notches 57, 58, 75, 55, 77. The vertical sidewalls 41, 42, 46, 47, once assembled, have vertical flaps 59, 79 that open inward defining fork passages whereby the vertical flaps lock horizontal flaps 43, 44, 48, 49 from opening.
[5] Ibid.
[6] Ibid Page 3.
[7] Ibid.
[8] Ibid.
[9] Ibid Page 9; Figure 2.
The law
On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar)Act 2012 (raising the bar) commenced. This act amended Section 32 of the Patents Act, amongst other sections. Section 32 is now more restrictive than prior to 15 April 2013. Section 32 now only enables any of the applicants in a patent case to request the Commissioner to make a determination. Beforehand, any interested party could have made such a request. The dictionary (Schedule 1) to the Patents Act provided that an ‘interested party’, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person.[10]
[10] MainRain Pty Ltd and Sunny Daze Trading Pty Ltd v Trentman Pty Ltd [2015] APO 42; 114 IPR 597.
The law in respect to disputes between applicants depends on the date the dispute arose.[11] It is obvious that there has been a pre-existing dispute between the parties regarding the subject matter of this patent application, but this particular dispute under section 32 arose on the date the request was filed. Consequently, section 32 post raising the bar applies. There is no evidence to suggest that this dispute had arisen before this date.
[11] Intellectual Property Laws Amendment (Raising the Bar) Act 2012 s 133(5).
Section 32 provides that should a disputes arise between applications:
(1) If a dispute arises between any 2 or more joint applicants in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those applicants, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the applicants alone, or for regulating the manner in which it is to proceed, or both, as the case requires.
(2) The Commissioner may make a determination under subsection (1) whether or not the application has lapsed.
(3) The Commissioner must not make a determination under subsection (1) without first giving each joint applicant a reasonable opportunity to be heard.
A person may be entitled to the grant of a patent by contributing to the inventive concept, or have entitlement transferred by way of a verbal agreement,[12] or an express provision in a service agreement.[13] In University of Western Australia v Gray,[14] the Full Bench of the Federal Court accepted that entitlement is assessed by considering the three matters:[15]
(i) identify the "inventive concept" of the invention as defined by the claims;
(ii) determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and
(iii) determine how any contractual or fiduciary relationships give rise to proprietary rights in the invention
[12] University of British Columbia v Conor Medsystems, Inc [2006] FCAFC 154; 70 IPR 248.
[13] Khoury v Sherrard Pty Ltd [2018] APO 20; 1414 Degrees Limited v Climate Change Technologies Pty Ltd [2018] APO 28.
[14] University of Western Australia v Gray [2009] FCAFC 116; 82 IPR 206.
[15] Ibid [253].
In relation to the question of when the invention was conceived, in University of Western Australia v Gray (No 20), French J listed the following principles:[16]
1. Conception is the touchstone of inventorship, the completion of the mental part of inventions.
2. Conception is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice”. It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
3. An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea. The discovery that an invention actually works is part of its reduction to practice.
4. It is not the law that the inventor’s definite and permanent idea must include a reasonable expectation that the invention will work for its intended purpose even when it deals with uncertain or experimental disciplines where the inventor cannot reasonably believe that an idea will be operable until some result supports that conclusion.
[16] University of Western Australia v Gray (No 20) [2008] FCA 498; 76 IPR 222 at [1426] referring to Burroughs Wellcome Co v Barr Laboratories Inc [1994] USCAFED 1225; (1994) 40 F 3d 1223.
Helpfully, Dr Gabrys makes reference to a number of decisions of the Federal Court,[17] the Administrative Appeals Tribunal,[18] and the Australian Patent Office.[19] Briefly, I note that in accordance with a hierarchy, judicial officers are bound by the doctrine of precedent and should pay respect to, and not be departed from, past judicial decisions.[20] On the other hand, previous decisions of tribunals are not binding.[21] Notwithstanding, there is a need for consistency and lack of arbitrariness in administrative decision making.[22] To this end, I will make reference to these decisions should they become relevant.
[17] Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9; 75 IPR 1; Kafataris v Davis [2016] FCAFC 134; 120 IPR 206.
[18] John Dillon Upham and Commissioner of Patents; Victor and Dan Vrubel (Joined parties) [1998] AATA 852; (1998) 28 AAR 276.
[19] MARTIN RUSSELL HARRIS v. C.S.I.R.O. [1993] APO 43; 26 IPR 469; DOMINIC VICTOR COSTA v. GR & IE DAKING PTY LTD [1994] APO 23; 29 IPR 241; Primmcoy Pty Ltd v Barry Charles Teer [2003] APO 37.
[20] Transurban City Link Ltd v Allan [1999] FCA 1723; (1999) 168 ALR 687 at [26]-[28] cited with approval in Mastronardo v Commonwealth Bank of Australia Limited [2019] FCAFC 127.
[21] Zumpano v Banyule City Council [2016] VSC 420 at [16]-[22].
[22] Drake v Minister for Immigration and Ethnic Affairs (No 2) [1979] AATA 179; 46 FLR 409.
Inventive Concept
As the application has currently not been granted, the inventive concept is in relation to an invention disclosed in the specification as filed.[23] Dr Gabrys explains that corrugated pallets are typically not very complicated, as they need to be quickly and efficiently assembled to be commercially viable. Many corrugated pallets are not complex, as complicated designs as unlikely to be commercially viable. To this end, Dr Gabrys states that the corrugated pallet in the present application was developed during two brainstorming conference meetings during 2012 and was the result of about two hours of group collaboration.[24] Dr Gabrys submits that the inventive concept, covers a new configuration of corrugated pallet having two folded ribs per blank, rectangular blanks with no protruding tabs, and with the wrap under/over corner strap locks, as part of the combination of other elements that allow it to be more readily machine-assemblable.[25] By way of example, Dr Gabrys provides the following figures which shows how the corrugated pallet is assembled:[26]
[23] Patents Act1990 s 36; See also Shaun Gregory Power v Dale Arthur John Long [2018] APO 57; William Kyunghwan Kwon v William John Trickett [2018] APO 51; Domino's Pizza Enterprises Limited v Precision Tracking Pty Ltd [2016] APO 13; John Antony v NewSouth Innovations Pty Limited [2019] APO 41.
[24] Gabrys #1 at Page 3.
[25] Ibid Page 12.
[26] Ibid 14. See also Figures 1-3, 6, 8-10 of the Specification as filed.
The requestors submit that the inventive concept is:[27]
The pallet is produced from two flat blanks folded to produce only two parallel vertically extending double thickness ribs, three horizontal panels, two vertical side walls and two horizontal flaps. The ribs lock each other from opening at the centres by intersecting with notches and the horizontal flaps lock the ribs at the edges. Further, the vertical side walls comprise vertical flaps that open inward defining fork passages whereby the vertical flaps lock the horizontal flaps from opening.
The claims of the Application are directed towards a pallet having only two ribs and the above locking arrangement.
It is submitted that the inventive concept is a pallet that can be formed with only two ribs combined with the claimed locking arrangement so as to provide an assembled pallet with sufficient strength.
The top and bottom blanks are locked together by corner strap locks that fold over the top and bottom corners. This arrangement is an improvement over punch locks and further allows the blanks to be rectangular.
[27] Requestor Submissions, Page 3.
In my view, the inventive concept appears to lay in a corrugated pallet having only two ribs and is responsible for several benefits as indicated above,[28] in combination with a locking arrangement. Neither party appears to disagree with this view.
[28] See also Specification as filed, Page 3.
Timeline of Events
Dr Gabrys provides a timeline of events, commencing on 14 June 2010 when Mr Danko merges his corrugated pallet company, Corrugated Pallets by Design, with Designs Pallets Inc. Notably, Mr Olvey is the current president of Designs Pallets Inc. The timeline concludes on 17 November 2018, when Mr Gabrys filed his Evidence in Support for the present matter. Generally, the timeline provides an overview of commercial activities between the parties, and in the filing of several patent applications.[29] While contextually useful, I find that the timeline falls short of establishing who contributed to the inventive concept, for the present application.
[29] Gabrys #1 at [3]-[11].
External Opinions
In an interesting albeit unusual manner, both parties submitted evidence from foreign legal practitioners. The requestors filed a declaration by Gina Cornelio, who is a Partner with the law firm Dorsey and Whitney LLP. Ms Cornelio states that she is making the declaration in her capacity as Counsel for Green Ox Pallet Technology, which is the exclusive licensor of the pending application.[30] In response, Dr Gabrys files a declaration by John Michael Neary. Mr Neary states that he has been practicing patent law for more than 45 years and has been representing Dr. Gabrys since 1987.[31] Presumably, Mr Neary has been practising patent law predominately in the United States. While I appreciate the efforts of both Ms Cornelio and Mr Neary in identifying and summarising the issues of contention, nothing is said in respect of what each applicant contributed to the inventive concept. Consequently, they hold little weight in my determination.
[30] Cornelio at [1].
[31] Neary at [1].
The Meetings
According to Dr Gabrys, conception of the inventive concept was the result of about two hours of group collaboration, during two meetings spaced apart by four weeks during the spring of 2012.[32] Dr Gabrys has provided what appears to be two meeting invites.[33] The first meeting was organised by Joseph Danko and occurred on 19 April 2012 between 10 am to 12 pm. The subject of the meeting is listed as ‘Meeting Meeting Meeting’. The other attendees listed on the invite are Doug, Larry DPI, Sean Gumbert, Dan Coleman, Chris Gabrys, and an email address belonging to another individual. The meeting agenda is set out as follows:
[32] Gabrys #1 at Page 3.
[33] Exhibit CG-02.
Agenda
Sales & Marketing, Website Joe Danko
Contract Clean Up Joe Danko
Overseas Efforts Dan Coleman
Machine Assembled Pallet Design Engineering
Machine Shop update (parts and pieces needed) Chris Gabrys
Preparation for P&G meeting All
Preparation for Sonoco meeting May 1 AllMisc.
The second meeting was also organised by Joseph Danko and occurred on 15 May 2012 between 1 pm to 2 pm. The subject of the meeting is listed as ‘Next Generation Pallet Meeting’. The other attendees listed are Dan Coleman, and Larry DPI. There are three other email addresses listed, all belonging to the domain ‘loadek’. The meeting agenda states ‘[a] meeting to finalize the pallet design and go over some last minute sales and marketing questions.’
Regrettably, Dr Gabrys did not provide any further information in relation to what was discussed during these meetings. For example, it would have been helpful if there were documents showing what aspects of the corrugated pallet design were being looked at, and who contributed. Moreover, in my view, it is not apparent whether the evidence establishes what pallet design was discussed at these meetings. Without any additional information, it would be inappropriate for me to make an inference as to what discussions may have went on during these meetings. Moreover, it is unclear what role each meeting attendee played, or if they were in attendance. Consequently, I do not find the meeting minutes helpful in deciding whether I should make a determination.
The Depositions
Each party submitted transcripts of a videotaped deposition. The first deposition, is of Dr Gabrys and is dated 31 October 2016 between 10:04 am to 4:21 pm, at Orange Legal in Florida USA.[34] The second videotaped deposition is of Joseph Danko, and is dated 1 November 2016 between 1:31 pm to 5:07 pm, also at Orange Legal in Florida USA.[35] It appears there may be some differences in the copies provided, in that Dr Gabrys’s version contains highlighted portions. Conversely, the versions filed by the requestors appears to be redacted. In any event, for reasons that will soon become apparent, this difference is of little concern.
[34] Exhibit CG-07; Exhibit AMM-2; Exhibit DO-2.
[35] Exhibit CG-08; Exhibit AMM-3; Exhibit DO-3.
Relevantly, the depositions concern what each person contributed to the inventive concept and represent what Dr Gabrys and Mr Danko perceives to be true. However, in my view, both Dr Gabrys and Mr Danko appear to be relying on their personal recollection and belief, of who came up with what. By way of example, when asked who contributed specific parts of the inventive concept, both Dr Gabrys and Mr Danko regularly use the term ‘I believe’. When asked who came up with an idea, it was proposed that it may have been one person or may have been another. Mr Olvey refers to parts of both depositions, in an attempt to establish that either Mr Sketo or himself came up with the idea of the way which the blank folded over the top and bottom, or the idea of the wrap around lock.[36] For context, these are provided below:[37]
[36] Olvey at [10]-[13].
[37] Ibid.
10. I refer to page 246 of the Gabrys deposition which includes the following at lines 1 to 16;
Q And I think you mentioned yesterday that there were some issues with regard to the corner locks and the strap lock. The fix to that was suggested by Mr. Sketo or Mr. Olvey in the meeting?
A The fix was to make the – the blank square rectangular instead of having protruding elements.
Q I meant the way it folded over the top and the bottom, that was suggested by Sketo and Olvey?
A That was suggested by Sketo and Olvey, I believe, as this – the means to – to make the blanks rectangular.
Q Okay. And the rectangular nature of those was something that was discussed among the five that were the inventors?
A That’s correct. It was – Mr. Danko insisted on it for the reason that protruding elements become damaged in transit, and I requested it because you can’t make a machine register blanks that have protruding elements.
Q So if somebody were to say, under your definition, that corner lock doesn’t look right. I don’t think that’s going to work, they’re offering part of the collaboration, they’re part of being the inventor?
A I don’t think that would constitute being an inventor.
Q Did you ever know Mr. Danko to design a pallet?
A I don’t know if he designed pallet – pallets or not.
Q Okay
A I wasn’t there at DPI before 2011.
Q Okay. In 2012, tell me everything you were aware of personally that he ever designed a single pallet or an element of a pallet?
A I don’t know if he did or did not.
Q I’m asking you whether he didn’t – tell me everything you are personally aware of that you have firsthand knowledge that he ever designed any element –
A Before –
Q – of a pallet as of 2012, the meeting.
A I have – I have no idea what he knew
Q So you can’t cite anything that you’re aware of?
A No.11.I can confirm that the statement made by Mr. Gabrys that the way in which the blank folder over the top and the bottom was suggested by myself and Mr Sketo. No other person contributed to this concept.
12. I now refer to pages 83 and 84 of the Danko deposition that states;
Q Okay. All right. So you’ve given me three features that you were an inventor on, the – lack of glue, if that’s a feature, the rectangular blank and, then, getting rid of the punch locks?
A Right. And, then, I was part of the collaborative effort to come up with a lock that would remain rectangular and still perform its proper function, keeping the top on the bottom, in the corners. And that was a meeting that we had – and we did have white boards, we were drawing different methods that we – we – we thought might work. Then we had a pallet right there –
Q Who is “we were drawing”?
A I drew some ideas, I – I believe Sean drew some ideas, Chris may have drew some ideas. I don’t believe Larry got up, but he was in the meeting. I believe Doug hall – Doug was in the – the doorway with me with a pallet, if I – if my memory serves me correctly … So it was brainstorming. And, then, ultimately we came up with the idea of the wraparound lock to the top and one to the bottom.
Q And who came up with that idea?
A It may have been Larry Sketo, may have been Doug Olvey.
Q Okay. So it’s one of those two who ultimately came up with it in that brainstorming session?
A I believe so.13.I can confirm that the statement made by Mr Danko is correct. Only Mr Sketo and myself came up with the idea of the wrap around lock. No other person contributed to this concept.
(emphasis in quote)
In this respect, it is difficult for me to conclude that either deposition clearly articulates exactly what each person contributed to the inventive concept. Where specific parts of the inventive concept are discussed, the language used does not fill me with confidence that this is an accurate reflection of reality. Notwithstanding, I note that no further information by way of documentation or corroborating evidence have been provided. Conversely, while Mr Olvey has made statements which suggests what himself and/or Mr Sketo had contributed, this is only in relation to some aspects of the inventive concept. It would have been helpful if Mr Olvey or Mr Sketo had provided evidence which illustrates exactly what they contributed.
Consequently, I am not satisfied that the depositions provide information in a manner which allows me to conclude who contributed to the inventive concept, and what they contributed. It follows that I do not find the depositions helpful in deciding whether I should make a determination.
Conclusion
Based on the above, it would appear that Mr Gabrys and Mr Danko had some involvement in the development of the inventive concept. However, in my opinion, it is unclear exactly what Mr Gabrys and Mr Danko contributed. Conversely, the evidence before me does not establish that Mr Olvey and Mr Sketo are the sole inventors who, as the requestors, carry the legal burden of proof. It follows that I am not satisfied the application should proceed in the name of Mr Olvey and Mr Sketo only. It is clear from section 32(1) that this provision is discretionary. It follows that I should decline to make a determination, and the application will remain in the names of Sean G. Gumbert, Joseph J. Danko, Douglas A. Olvey, James L. Sketo and Christopher W. Gabrys.
Costs
It is usual in matters before the Commissioner that costs should follow the event. In declining to make a determination, Mr Olvey & Mr Sketo have not been successful. Rather, it could be said that Mr Gabrys and Mr Danko have been successful in this matter. Consequently, I see no reason to depart from this usual practice. I award costs in accordance with Schedule 8 against the requestors, Douglas A. Olvey & James L. Sketo.
Isaac Tan
Delegate of the Commissioner of Patents
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